DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
In response to the Election/Restriction mailed to applicant on 05/07/2026, applicant’s made an election of Invention II in the reply filed on 05/27/2026. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
A complete search of the microscopy apparatus as recited in the independent claim 7 and the microscopy method as recited in the independent claim 1 has resulted that the microscopy apparatus as recited in the independent claim 7 and the microscopy method as recited in the independent claim 1 each is allowable with respect to the prior art, thus the Election/Restriction mailed to applicant on 05/07/2026 is now withdrawn. All pending claims 1-15 are examined in the present office action.
Election/Restrictions
Claims 1 and 7 each is allowable over the prior art. The restriction requirement among Inventions I-III, as set forth in the Office action mailed on 05/07/2026 , has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is hereby withdrawn as to any claim that requires all the limitations of an allowable claim. Specifically, the restriction requirement of 05/07/2026 is now withdrawn. Claims 2 and 9-10, directed to Invention I, and claims 3 and 15, directed to Invention III, are no longer withdrawn from consideration because the claim(s) requires all the limitations of an allowable claim.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in EU on 05/16/2023. It is noted, however, that applicant has not filed a certified copy of the European application as required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification, see pages 2-3, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Information Disclosure Statement
The information disclosure statement, hereafter, IDS, filed 08/05/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the reference number of each US Publications are not correct. Applicant should note that there are seven digit numbers appeared after the year of each US Publication. In the mentioned IDS, there are only six digit numbers appeared the year of the US Publication. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings contain six sheets of figures 1-6 were received on 05/08/2024 These drawings are approved by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The Summary of the Invention is objected to because it compares the invention with the prior art. Appropriate correction is required.
Claim Objections
Claims 7-15 are objected to because of the following informalities. Appropriate correction is required.
a) In claim 7: on line 5, “illuminaing” is a typo. The mentioned term should be changed to –illuminating--, see the claim on lines 2-4.
b) In claim 10: what does applicant mean by “a controller ()” (line 1)?
c) In claim 15: what does applicant mean by “acquisition ()” (line 1)?
d) The remaining claims are dependent upon the objected base claims and thus inherit the deficiencies thereof.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
a) “an illumination modulator”; “optics”; “a scanning unit” and “2D Bravais lattice” as recited in each of present claims 1 and 7;
b) “a controller” as recited in present claim 10; and
c) “an evaluation unit” as recited in present claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
15. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
16. Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a1) each of the features thereof “the focus” (line 11), “the location” (line 13), “the direction of propagation” (line 16), “the form” (line 20) and “the projection” (line 22) lacks a proper antecedent basis;
a2) it is unclear about the so-called ”a plurality of points of illumination (8, 11)” recited in the claim on lines 11-12 and lines 19-20. Applicant should note that the claim recites a light strip comprises a plurality of points of illumination on lines 11-12; however, the claim also recites an illumination pattern having a plurality of points of illumination on lines 19-20. What is/are the relationship(s) between two set of “a plurality of points of illumination” of the light strip and the illumination pattern? and
a3) the feature thereof “during a scan of the light strip … and in that the projection of the first primitive vector” (lines 18-22) makes the claim indefinite. What does applicant mean by the mentioned feature?
b) Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the features thereof “the surface detector” (line 2) lacks a proper antecedent basis.
c) Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
c1) the claim is indefinite by the feature thereof “the relative movements” (line 5) lacks a proper antecedent basis; and
c2) the claim is indefinite due to the use of term thereof “preferably” in the feature thereof “the relative movements … in space” (lines 5-6). Applicant should note that the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
d) Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the illumination modulator … each cylindrical lens (16)” (lines 1-3). It is completely unclear about the so-called “row of apertures (2) in a mask (17)” (line 3) does applicant imply here? What is/are structural relationship(s) among the so-called “row of apertures”, “mask” and “illumination modulator”?
e) Claim 7 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
e1) the claim is indefinite because each of the features thereof “the focus” (line 11), “the location” (line 13), “the direction of propagation” (line 16), “the form” (line 20), “the projection” (line 22) and “the projection” (line 23) lacks a proper antecedent basis; and
e2) it is unclear about the so-called ”a plurality of points of illumination (8, 11)” recited in the claim on lines 15-16 and lines 19-20. Applicant should note that the claim recites a light strip comprises a plurality of points of illumination on lines 15-16; however, the claim also recites an illumination pattern having a plurality of points of illumination on lines 19-20. What is/are the relationship(s) between two set of “a plurality of points of illumination” of the light strip and the illumination pattern?
f) Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
f1) the claim is indefinite by the feature thereof “the first primitive vector … 2 to 15” (lines 1-3) makes the claim indefinite. How many “primitive vector(b)” does the microscopy apparatus have? Applicant should note that the base claim 7 recites a second, shorter primitive vector (b), see claim 7 on lines 21-22, thus, what is/are the structural relationship(s) between the “second, short primitive vector (b) recited in claim 7 and the so-called “a primitive vector (b) recited in claim 8? and
f2) the claim is indefinite due to the use of term thereof “preferably” in the feature thereof “the first primitive vector (a) … preferably by a factor of 2 to 15” (lines 1-3). Applicant should note that the term “preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
g) Each of claims 9 and 10 is under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
h) Claim 13 is under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the similar reason as set forth in element b) above.
i) The remaining claims are dependent upon the rejected base claims and thus inherit the deficiencies thereof.
Allowable Subject Matter
17. Claims 1-15 would be allowable if rewritten/amended to overcome the rejections of the claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
18. The following is a statement of reasons for the indication of allowable subject matter:
The microscopy apparatus as recited in the independent claim 7 and the microscopy method as recited in the independent claim1 each is allowable with respect to the prior art, in particular, the US Patent No. 7,339,148 by the limitations regarding the illumination patter produced by the illuminator modulator as recited in the features thereof “the illuminator … the first primitive vector” (claim 1 on lines 19-22) or the features thereof the illuminator … the light strip (3)” (claim 7 on lines 19-24).
It is noted that while the mentioned US Patent discloses a microscopy apparatus having a light source (13, 13a) for providing a light beam to illuminate a sample (10), an objective lens (9) for focusing illuminating light onto the object, a detector (12, 121) , an illumination modulator (4), optics (14, 3, 15, 2, 1, 6, 8) which is together with the illumination modulator for providing an illuminating pattern/lattice of a light strip having points of illumination, and a scanning unit (5) for scanning the light strip over the body, see the mentioned Patent, columns 7-10 and fig. 1(a), for example; however, the mentioned Patent does not disclose that the illumination pattern/lattice is in a form of an asymmetrical 2-dimentsional Bravais lattice as recited in the present claims, see claim 1 on lines 19-22 with the features thereof an illumination pattern … first primitive vector” or in claim 7 on lines 19-24 with the features thereof an illumination pattern … light strip (3)”.
Conclusion
19. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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